World Intellectual Property Organization

WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

LEGO Juris A/S v. Mediatrac Sistem Komunikasi Syahroni

Case No. D2012-1195

1. The Parties

Complainant is LEGO Juris A/S of Billund, Denmark, represented by Melbourne IT Digital Brand Services, Sweden.

Respondent is Mediatrac Sistem Komunikasi Syahroni of Jakarta, Indonesia.

2. The Domain Name and Registrar

The disputed domain name <rumahlego.com> is registered with eNom.

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on June 13, 2012. On June 13, 2012, the Center transmitted by email to eNom a request for registrar verification in connection with the disputed domain name. On June 14, 2012, eNom transmitted by email to the Center its verification response confirming that Respondent is listed as the registrant and providing the contact details.

The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified Respondent of the Complaint, and the proceedings commenced on June 27, 2012. In accordance with the Rules, paragraph 5(a), the due date for Response was July 17, 2012. The Response was filed with the Center on July 17, 2012.

The Center appointed Bradley A. Slutsky as the sole panelist in this matter on August 15, 2012. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

Complainant is a manufacturer of construction toys and other products and has been using the trademark LEGO for toy building blocks since at least 1934. Complainant obtained a trademark registration for LEGO in the United States (in international class 28 for “toy building blocks and connecting links for the same, sold separately and as kits for construction of toy houses, buildings, household furnishings, robots, doll figures and vehicular toys”) in 1975. Complainant has numerous trademark registrations for LEGO around the world. Respondent registered the disputed domain name on March 8, 2012. Respondent’s website states that it is under construction and has a background picture that depicts LEGO Bricks and at least one LEGO character. After 10 seconds Respondent’s website redirects to “www.mediatrac.net”.

5. Parties’ Contentions

A. Complainant

Complainant argues that it is the owner of numerous trademark registrations around the world for the trademark LEGO, that it has been using the LEGO trademark in the United States since 1953, that its revenue in 2009 exceeded USD 2.8 billion, that it has registered more than 2,400 domain names incorporating the trademark LEGO, and that the LEGO trademark is famous. Complainant supports these assertions with a 36 page Annex listing LEGO trademark registrations from numerous countries around the world (including the United States, Complainant’s home country of Sweden, and Respondent’s home country of Indonesia), a 46 page single-spaced listing of domain names incorporating the word LEGO (all registered to Complainant), and a British “superbrands” survey that lists LEGO as the eighth (8th) most famous brand in the world. Complainant asserts that the disputed domain name is confusingly similar to the LEGO trademark, as the disputed domain name consists of the LEGO trademark plus the generic term “rumah” (which Complainant identifies only with a hotel in Bali), plus the “.com” gTLD. Complainant asserts that Respondent has no trademark registrations for the disputed domain name, has no license or other authorization from Complainant to use the LEGO trademark, and has not made any use of the disputed domain name that would give Respondent any rights or legitimate interests in the disputed domain name. Complainant asserts that Respondent must have registered the disputed domain name due to the fame of Complainant’s trademark, and asserts that Respondent’s website contains images related to LEGO products. Complainant further asserts that the disputed domain name forwards to Respondent’s website at “www.mediatrac.net”, which is alleged to have been a movie ticket and theatre website. Accordingly, Complainant asserts that “Respondent is trying to sponge off the Complainant’s world famous trademark.” Complainant asserts that it sent a cease and desist letter and two reminder letters requesting that Respondent voluntarily transfer the disputed domain name to Complainant in exchange for registration and transfer fees, not to exceed out-of-pocket expenses. Complainant asserts that Respondent did not respond to any of these letters. Complainant also asserts that it would make more sense for Respondent to use its own company’s name for its website, rather than using a well-known trademark to attract traffic to its website, and that Respondent is therefore “intentionally attempt[ing] to attract, for commercial gain, Internet users to the website, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of [Respondent’s] websites”.

B. Respondent

Respondent sent an email message to the Center on July 17, 2012 asserting that Respondent’s company does not produce toys and therefore “there is no relation on type of business.” Respondent further asserts that “The main concept of RumahLego precense is to provide a playground center whereby Lego products as the instrument (i.e Toys) including Lego robotic simulation and it can be Lego product awareness at local market Jakarta/Indonesia (positive side) to maximize the logic simulation by using Lego products”. Respondent further notes that its website is under development, and that the Center can check the content of the website after it goes live.

6. Discussion and Findings

Pursuant to paragraph 15(a) of the Rules, a panel in UDRP proceedings “shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable”.

Under paragraph 4(a) of the Policy, Complainant must prove the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and

(ii) Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

A. Identical or Confusingly Similar

Under paragraph 4(a)(i) of the Policy, Complainant must show that the disputed domain name is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Complainant’s trademark registrations and unrebutted long and extensive use demonstrate that Complainant has rights in the LEGO mark.

The disputed domain name consists of Complainant’s LEGO mark, plus the generic word “rumah” appended to the beginning, plus the “.com” gTLD. Complainant notes that it “has only found associations with the term ”Rumah” being a name if a hotel in Bali for example” The Panel notes that, according to “translate.google.com”, “rumah” is the Indonesian word for home, house, door, building, and dwelling. The addition of generic words to a trademark does not avoid confusing similarity to the mark. See Dr. Ing. h.c. F. Porsche AG v. Rojeen Rayaneh, WIPO Case No. D2004-0488 (“Long-established precedent has generally recognised confusing similarity where well-known trademarks have been adapted with a wide range of prefixes or suffixes”); Viacom International, Inc., Paramount Pictures Corporation, and Blockbuster Inc. v. TVdot.net, Inc. f/k/a Affinity Multimedia, WIPO Case No. D2000-1253 (“Although the domain names at issue are not identical to the Complainant’s marks, a finding of similarity cannot be avoided by adding a common or generic term to the complainant’s mark”). Indeed, if “rumah” does mean home or house it may suggest an affiliation with the LEGO brand, implying that Respondent’s website is the home of LEGO. Sanofi-Aventis v. PLUTO DOMAIN SERVICES PRIVATE LIMITED, WIPO Case No. D2008-1483. The addition of the “.com” gTLD does not remove the confusing similarity between the disputed domain name and Complainant’s mark. Deutsche Lufthansa AG v. Nadeem Qadir, WIPO Case No. D2009-0003.

Accordingly, the Panel finds that the disputed domain name is confusingly similar to a trademark or service mark in which Complainant has rights, and that paragraph 4(a)(i) of the Policy is satisfied.

B. Rights or Legitimate Interests

Complainant also must demonstrate that Respondent has “no rights or legitimate interests in respect of the domain name”. Paragraph 4(a)(ii) of the Policy.

“Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate [Respondent’s] rights or legitimate interests to the domain name[s] for purposes of paragraph 4(a)(ii):

(i) before any notice to [Respondent] of the dispute, [Respondent’s] use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) [Respondent] (as an individual, business, or other organization) ha[s] been commonly known by the domain name, even if [Respondent has] acquired no trademark or service mark rights; or

(iii) [Respondent is] making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

Policy, paragraph 4(c).

There is no evidence that Respondent has used or demonstrably prepared to use the disputed domain name in connection with a bona fide offering of goods or services, that Respondent has been commonly known as “rumahlego”, or that Respondent is making a noncommercial or fair use of the disputed domain name. Respondent is using Complainant’s trademark to redirect users to Respondent’s “www.mediatrac.net” website, which is alleged (with no rebuttal) to have been a movie ticket and theatre website. The use of a complainant’s trademark to redirect consumers to a respondent’s commercial website, with no permission from the complainant and no evidence that the respondent has been commonly known by the disputed domain name, does not give rise to rights or legitimate interests. Public Service Electric & Gas Company v. Vanguard Resolutions LLC, WIPO Case No. D2012-0618; LEGO Juris A/S v. Trent Clark/Darryl Lowe, WIPO Case No. D2010-0482; Guerlain S.A. v. Peikang, WIPO Case No. D2000-0055. Respondent asserts that it has a concept involving LEGO product awareness, but it has not shown use or demonstrable preparations to use the disputed domain name for a bona fide offering of goods or services, or that it has been commonly known by the disputed domain name, or that it is making a noncommercial or fair use of the disputed domain name.

Accordingly, the Panel finds that Respondent has no rights or legitimate interests in respect of the disputed domain name, and that paragraph 4(a)(ii) of the Policy is satisfied.

C. Registered and Used in Bad Faith

Complainant also bears the burden of establishing that the “domain name has been registered and is being used in bad faith”. Policy, paragraph 4(a)(iii). As set forth in the Policy, paragraph 4(b):

“[T]he following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that [Respondent has] registered or [Respondent has] acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to [C]omplainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [Respondent’s] documented out-of-pocket costs directly related to the domain name; or

(ii) [Respondent has] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent has] engaged in a pattern of such conduct; or

(iii) [Respondent has] registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, [Respondent has] intentionally attempted to attract, for commercial gain, Internet users to [Respondent’s] web site or other on-line location, by creating a likelihood of confusion with Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of [Respondent’s] web site or location or of a product or service on [Respondent’s] web site or location.”

The use of the disputed domain name to redirect users to Respondent’s “www.mediatrac.net” website, which is alleged without rebuttal to have been a movie ticket and theatre website, fits squarely within paragraph 4(b)(iv) of the Policy. Hoffmann-La Roche Inc. v. Kevin Chang, WIPO Case No. D2008-1344. Further, Respondent did not respond to Complainant’s cease and desist letters and did not explain that failure in its Response. This also is evidence of bad faith. News Group Newspapers Limited and News Network Limited v. Momm Amed Ia, WIPO Case No. D2000-1623; Nike, Inc. v. Azumano Travel, WIPO Case No. D2000-1598; America Online, Inc. v. Antonio R. Diaz, WIPO Case No. D2000-1460.

Accordingly, the Panel finds that the present record supports a conclusion that the disputed domain name has been registered and is being used in bad faith, and that paragraph 4(a)(iii) of the Policy is satisfied.

7. Decision

For all the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <rumahlego.com> be transferred to Complainant.

Bradley A. Slutsky
Sole Panelist
Dated: August 29, 2012

 

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